James N. Willi

James N. Willi

Attorney Profile

Top Rated Estate Planning & Probate Attorney in Austin, TX

Willi Law Firm, P.C.
 | 9600 Escarpment Blvd., Ste. 745, PMB 34
Austin, TX 78749-1983
Phone: 512-288-3200
Selected to Super Lawyers: 2014 - 2017
Licensed Since: 1996
Practice Areas:
  • Estate Planning & Probate (60%),
  • Elder Law (20%),
  • Estate & Trust Litigation (10%),
  • Intellectual Property Litigation (10%)
Attorney Profile

Jim Willi has over 20 years of experience in estate planning, wills, trusts, asset protection, gun trusts, firearms law, probate, estate and probate litigation, business transactions, Texas business entity formation, contracts, civil, commercial, and intellectual property litigation and appellate experience, intellectual property prosecution and licensing, and real property transactions.

Mr. Willi is licensed to practice law in Texas and Colorado, registered to practice law in the United States Patent and Trademark Office, and admitted to practice law before the United States Supreme Court, the Court of Appeals for the Federal Circuit, and the United States District Courts for the Northern, Southern, Eastern, and Western Districts of Texas.

Mr. Willi is a member of the College of the State Bar of Texas and the Austin Bar Association. He was recognized as a Texas Super Lawyer by his attorney peers in 2014, 2015, 2016, and 2017. Before practicing law, he was an electrical engineer from 1986 to 1996 involved in system operations and planning of electrical power distribution and transmission systems at Houston Lighting & Power Company. Mr. Willi has been a Licensed Professional Engineer in Texas since 1990.

About James Willi

Admitted: 1996, Texas

Professional Webpage: http://www.willi.com/attorneys/james-n-willi

Honors and Awards:

  • Willi Law Firm was listed as a Top Cougar 100 Company, Top Cougar 100 Company, Houston Business Journal, 2016
  • Texas Super Lawyer, 2016
  • Willi Law Firm was ranked 23rd place, Top 25 Intellectual Property Law Firms, Austin Business Journal, 2015
  • Willi Law Firm was listed as a Top Cougar 100 Company, Top Cougar 100 Company, Houston Business Journal, 2015
  • Texas Super Lawyer, 2015
  • Willi Law Firm was ranked 20th place, Top 25 Intellectual Property Law Firms, Austin Business Journal, 2014
  • Texas Super Lawyer, 2014
  • Willi Law Firm was ranked 21st place, Top Intellectual Property Law Firms, Austin Business Journal, 2013
  • Order of the Lytae, South Texas College of Law, 1994

Special Licenses/Certifications:

  • Patent Attorney, United States Patent and Trademark Office, 2001
  • Licensed Professional Engineer, Texas, 1990

Bar/Professional Activity:

  • Austin Bar Association, Austin Intellectual Property Law Association, College of the State Bar of Texas.

Pro bono/Community Service:

  • Austin Power Squadron, United States Power Squadrons - Law Officer (2012), Executive Board, Member at Large (2012)
  • Southwest Austin Lacrosse Association, Inc. - President (2011-2013), Director (2011-2014).
  • Austin Toastmasters - Treasurer (2009), Vice President-Education (2010), President (2011)
  • Capitol Area Council, Boy Scouts of America - Adult Leader (2003-present)

Scholarly Lectures and Writings:

  • Jim Willi was the speaker for the NFA Trusts 101 Seminar at the Texas State Rifle Association's Annual Meeting on February 25, 2017, Speaker, NFA Trusts 101, Texas State Rifle Association, 2017
  • Jim Willi was the featured speaker on intellectual property law at Freelance Austin's monthly meeting., Speaker, Intellectual Property Law for Busy Professionals, 2012
  • Jim Willi was the featured speaker on intellectual property law at the July 20, 2011 meeting of the Austin Professional Chapter of the Association for Women in Communications., Speaker, Overview of Intellectual Property Law, Austin Professional Chapter Of The Association For Women In Communications, 2011
  • This article proposes a uniform federal common law of attorney-client privilege in U.S. patent litigation, so that the same federal common law of attorney-client privilege applies regardless of whether the client is foreign or domestic, whether the patent practitioner is foreign or domestic, and whether the patent is foreign or domestic., Author, Proposal for a Uniform Federal Common Law of Attorney-Client Privilege for Communications with U.S. and Foreign Patent Practitioners, 13 Texas Intellectual Property Law Journal 279, 2005

Verdicts and Settlements:

  • Willi Law Firm was lead counsel representing Arizona-based ON Semiconductor Corporation in a patent infringement lawsuit filed in the U.S. District Court for the Southern District of Texas, Houston Division. The patent in suit, U.S. Patent No. 6,243,315, related to computer memory systems with a low power down mode.  The case was settled to the mutual satisfaction of the parties., 2013
  • Willi Law Firm represented Austin-based Getagadget, Inc. in two trademark opposition proceedings in the United States Patent and Trademark Office before the Trademark Trial and Appeal Board (TTAB).  Getagadget sells BIG BITE™ bottle openers and beach toys to mass merchandisers (such as Wal-Mart, Walgreens, and CVS pharmacy), convenience stores, vacation resort gift shops, surf shops, souvenir stores, restaurants, bars, nightclubs, promotional companies, marinas, theme parks, water parks, yacht clubs, and golf clubs in the United States and foreign countries.  7-Eleven sells its BIG BITE® hot dogs in 7-Eleven convenience stores.  7-Eleven alleged that consumers would be confused, mistaken, or deceived into believing that Getagadget’s BIG BITE™ openers and beach toys, which were not sold in 7-Eleven convenience stores, were somehow related to or originated from 7-Eleven.  Alternatively, 7-Eleven alleged that Getagadget’s use of the BIG BITE™ mark for bottle openers and beach toys would somehow dilute 7-Eleven’s trademark for hot dogs.  The cases settled to the mutual satisfaction of the parties, and the trademark opposition proceedings were dismissed., 2013
  • Willi Law Firm represented Houston-based Popscreen, Inc. in a copyright infringement lawsuit filed in the United States District Court for the Southern District of Texas, Houston Division.  The case against Willi Law Firm’s client was voluntarily dismissed by the Plaintiff with no settlement payments being made by Popscreen., 2013
  • Willi Law Firm represented Cerium Laboratories LLC in an action for suit on a sworn account, breach of contract, breach of fiduciary duty and misappropriation of trade secrets, fraud, unjust enrichment, and constructive trust, and a declaratory judgment to declare the rights and other legal relations by and between Plaintiff and Defendants filed in the U.S. District Court for the Western District of Texas, Austin Division.  The case was settled to the mutual satisfaction of the parties., 2013
  • Willi Law Firm was local counsel for Utah-based ICON Health & Fitness, Inc., one of the world’s largest developers, manufacturers, and marketers of fitness equipment with brands that include NordicTrack, ProForm, Weider, Reebok and Gold’s Gym, in a patent infringement lawsuit filed in the U.S. District Court for the Eastern District of Texas, Marshall Division.  The patents in suit, U.S. Patent Nos. 7,702.719 and 8,298,123 relate to improved methods, systems, and programs for controlling exercise machines., 2013
  • Willi Law Firm represented the Texas-based defendants in a copyright infringement case filed in the U.S. District Court for the Central District of California.  Willi Law Firm’s clients were accused of distributing, promoting, offering for sale, and selling counterfeit copies of various copyrighted works owned by the plaintiff on Amazon.com., 2013
  • Willi Law Firm was local counsel for Masschusetts-based Ipswitch, Inc. in a patent infringement lawsuit filed in the U.S. District Court for the Eastern District of Texas, Tyler Division. The patent in suit, U.S. Patent No. 7,024,696, related to a method and a system for prevention of piracy of software applications via a communications network, such as the Internet.  The case was settled to the mutual satisfaction of the parties., 2012
  • Willi Law Firm is local counsel for Massachusetts-based Ipswitch, Inc. in a patent infringement lawsuit filed in the U.S. District Court for the Eastern District of Texas, Marshall Division. The patent in suit, U.S. Patent No. 6,018,761, related to a system for adding information obtained from sources external to an electronic mail transport process to electronic email messages.  The case was settled to the mutual satisfaction of the parties., 2012
  • Willi Law Firm represented Formats Unlimited, Inc., Kunaki LLC, U.S. Digital Media, Inc., and Vervante Corporation in a patent infringement lawsuit, which was filed in the U.S. District Court for the Eastern District of Texas, Tyler Division, against multiple defendants.  The patent in suit related to computer-implemented methods and a system for digital data duplication systems using networks to fully automate the process from customer order processing to delivery.  Willi Law Firm filed a request for ex parte reexamination of the patent in suit, U.S. Patent No. 7,174,362, and for a continuation of the patent in suit, U.S. Patent No. 7,392,283, on February 14, 2012, in which Willi Law Firm requested the U.S. Patent and Trademark Office to reexamine all claims of the ’362 and ’283 patents in view of ten different prior art U.S. patents.  On March 1, 2012 and on May 11, 2012, the U.S. Patent and Trademark Office determined that a substantial new question of patentability affecting all claims of the ’362 and ’283 patents, respectively, was raised by Willi Law Firm’s request for ex partereexamination and, therefore, granted Willi Law Firm’s request for ex partereexamination of the ’362 and ’283 patents.  On May 17, 2012, the U.S. Patent and Trademark Office issued an office action rejecting claims 1, 2, 4, 7 and 8 of the ’362 patent in view of the submitted prior art.  On May 31, 2012, U.S. Magistrate Judge John D. Love issued a report and recommendation that the motion to dismiss pursuant to Federal Rules of Civil Procedure 12(b)(2) and 12(b)(3) filed by Willi Law Firm on behalf of its client, Formats Unlimited, Inc., should be granted and that that the patent infringement lawsuit against Willi Law Firm’s client should be dismissed for improper venue.  On September 27, 2012, Judge Leonard Davis adopted the recommendation of Magistrate Judge Love and ordered the patent infringement case against Willi Law Firm’s client, Format’s Unlimited, dismissed for improper venue.  The case against Willi Law Firm’s remaining clients was settled to the mutual satisfaction of the parties.  On February 20, 2013, the U.S. Patent and Trademark Office issued an office action rejecting all 14 claims of the ’283 patent in view of the submitted prior art.  During the reexamination proceedings for the ’283 patent, the applicant amended claims 1 and 3-4 and added claims 15-19 and 21-25.  On August 29, 2013, the U.S. Patent and Trademark Office issued a final office action rejecting claims 1-19 and 21-25 of the ’283 patent in view of the submitted prior art., 2012
  • Willi Law Firm represented Liveline Solutions, Inc. and its officers in a patent infringement lawsuit, which was filed in the U.S. District Court for the Southern District of Texas, Houston Division.  The patent in suit, U.S. Patent No. 5,538,207, involved a rotating and telescoping robotic arm operable by remote control for temporarily supporting and repositioning energized power lines to enable repair or replacement of transmission or distribution poles, crossarms, insulators, insulator pins and the like, or to relocate conductors to facilitate their replacement.  The case against Willi Law Firm's clients was settled to the mutual satisfaction of the parties., 2012
  • The Texas Third Court of Appeals issued a Mandate affirming the Travis County Probate Court No. 1's judgment in favor of Willi Law Firm's client, which included $109,500 in sanctions against the opposing party.  The Third Court of Appeals in Austin, Texas affirmed the probate court's judgment and ordered the appellant to pay $30,000 in penalties and all costs relating to the appeal to Willi Law Firm's client., 2011
  • Willi Law Firm negotiated a settlement in a case involving allegations of false patent marking pursuant to 35 U.S.C. § 292.  All issues in the case were resolved to the mutual satisfaction of the parties.  The court entered a final judgment permitting the sale of all remaining inventory marked with the expired patent number., 2011
  • Willi Law Firm negotiated a settlement in a case involving allegations of false patent marking pursuant to 35 U.S.C. § 292.  All issues in the case were resolved to the mutual satisfaction of the parties.  The court entered a final judgment permitting the sale of all remaining inventory marked with the expired patent number., 2011
  • Willi Law Firm represented a California corporation in a false patent marking lawsuit filed in the U.S. District Court for the Eastern District of Texas, Marshall Division.  The case against Willi Law Firm's client was voluntarily dismissed by the relator with no settlement payments being made by Willi Law Firm's client., 2011
  • Willi Law Firm represented Virginia defendants in a lawsuit involving allegations of cyberpiracy, contributory cyberpiracy, trademark infringement, and civil conspiracy filed in the U.S. District Court for the Southern District of Texas, Houston Division.  The case was dismissed after a favorable settlement in which Willi Law Firm's clients received cash., 2011
  • Willi Law Firm represented a Canadian corporation in a false patent marking lawsuit filed in the U.S. District Court for the Eastern District of Texas, Marshall Division.  The case against Willi Law Firm's client was dismissed with prejudice to the mutual satisfaction of the parties., 2011
  • Willi Law Firm represented an Oklahoma corporation in a false patent marking lawsuit filed in the U.S. District Court for the Eastern District of Texas, Marshall Division.  The case against Willi Law Firm's client was dismissed with prejudice to the mutual satisfaction of the parties., 2011
  • Willi Law Firm represented Iowa-based defendant, CD Technical, Inc., in a patent infringement lawsuit, which was filed in the U.S. District Court for the Eastern District of Texas, Tyler Division, against multiple defendants.  The patent in suit related to computer-implemented methods and a system for digital data duplication systems using networks to fully automate the process from customer order processing to delivery.  After Willi Law Firm demonstrated to the plaintiff that CD Technical's digital duplication equipment did not infringe the plaintiff's patent, the plaintiff agreed to voluntarily dismiss the case against CD Technical., 2011
  • Willi Law Firm represented Nashville, Tennessee-based defendants in a case involving allegations of fraud, fraudulent inducement, fraudulent concealment, negligence, negligent misrepresentation, tortious infererence with prospective economic advantage, conversion, false claims of good and clear title, false, misleading, and deceptive advertising, breach of implied warranty of fitness for a particular purpose, and breach of implied warranty of merchantability relating to the plaintiff's purchase of an airplane in Tennessee.  Judge Sam Sparks of the U.S. District Court for the Western District of Texas granted Willi Law Firm's motion to dismiss for lack of personal jurisidiction and ordered the case transferred to Tennessee.  The Court further determined that alleged misrepresentations involving the purchase of the airplane were “clearly not fraud” and could not form the basis of personal jurisdiction in Texas over Willi Law Firm's client.  Further, the Court ruled that the plaintiff's allegations of personal jurisdiction focused on alleged misrepresentations made to two individuals, but the alleged damages were not incurred by those individuals.  Instead, the Court ruled that any alleged damages in the case were incurred by their newly formed corporation, which was not formed until after the alleged misrepresentations were made.  The Court further ruled that telephone, facsimile, and letter communications between Tennessee and Texas during the negotiation of the contract did not constitute sufficient contacts for personal jurisdiction in Texas.  The Court also recognized that the physical address where one may send or retrieve an email is no more fixed to a particular location than the address where one may send or receive a telephone call.  The Court also ruled that the Texas resident initiated the purchase of the airplane outside of Texas by contacting a company outside Texas that does not direct marketing to Texas.  The Court made an additional finding that even if the Court had personal jurisdiction in Texas over Willi Law Firm's client, the plaintiff's fraud claims would be dismissed for failure to plead with specificity.  The Court astutely summed up the plaintiff's case by stating, “it simply seems like a case of buyer’s remorse [that] should have been pursued, if at all, in Tennessee.”, 2011
  • Attorneys from Willi Law Firm represented a construction company in Hurricane Ike-related litigation in Galveston County, Texas.  The case involved allegations of breach of contract, deceptive trade practices, fraud, and unfair debt collection practices.  Willi Law Firm obtained a take-nothing settlement on behalf of the construction company., 2010
  • Willi Law Firm was hired after a jury rendered a verdict, which included a finding of $7.5 million in punitive damages.  The case involved allegations of breach of contract, misappropriation of trade secrets, tortious interference with contract, tortious interference with prospective business relations, and conspiracy to misappropriate trade secrets.  In post-trial motions, Willi Law Firm argued for a reduction of punitive damages on multiple grounds.  Magistrate Judge Robert Pitman issued an opinion reducing the jury's award of punitive damages from $7.5 million to $1.9 million., 2010
  • Justice Bob Pemberton, joined by Justice Alan Waldrop, issued an opinion in favor of Willi Law Firm's client upholding the probate court's judgment, including $109,500 in sanctions.  The Third Court of Appeals in Austin, Texas, affirmed the probate court's rulings on motions for summary judgment on testamentary capacity, alleged oral conveyance of real property, forgery, and undue influence.  It also affirmed the probate court's award of sanctions and awarded an additional $30,000 in penalties to Willi Law Firm's client on appeal.  The appellant's petition for review was denied by the Texas Supreme Court., 2010
  • Judge Sam Sparks issued an opinion in favor of Willi Law Firm's New York client determining that Texas courts do not have personal jurisdiction over the defendant.  The case was filed in Williamson County, Texas, against a New York entity which maintains an Internet website.  The plaintiff alleged breach of contract, interference with contract, violations of the Texas Deceptive Trade Practices Act, and defamation.  Willi Law Firm removed the case to federal court based upon diversity of citizenship and sought dismissal.  The court determined that the Internet website was "passive" and the defendant's contacts with Texas were insufficient to exercise personal jurisdiction over the defendant. The case was dismissed., 2010
  • Faced with pending motions for summary judgment and motions for sanctions, the plaintiff in a Hays County district court case involving claims of defamation and business disparagement agreed to a take-nothing settlement and final order of dismissal of all claims against Willi Law Firm's clients with prejudice., 2010
  • Mr. Willi represented Visto Corporation in a patent infringement case involving email synchronization technology for mobile telephones.  Visto obtained a favorable settlement., 2007
  • Mr. Willi represented 911EP in a patent infringement case related to LED emergency warning light systems.  911EP obtained a favorable settlement., 2007
  • Mr. Willi represented Ericsson A.B. in a U.S. International Trade Commission investigation involving seven U.S. patents relating to mobile telecommunications technology.  Ericsson obtained a multi-million dollar settlement., 2007
  • Mr. Will represented OPTi, Inc. in a patent infringement case in the Eastern District of Texas involving computer chipsets.  OPTi obtained a multi-million dollar settlement., 2006
  • Mr. Willi defended a number of domestic and international airlines, including American Airlines, Northwest Airlines, and Korean Air, in a patent infringement case in the Eastern District of Texas.  The plaintiff stipulated to noninfringement after a claim construction ruling favorable to the clients.  Mr. Willi represented the airlines in the appeal before the Federal Circuit.  The district court's claim construction was affirmed., 2006
  • Mr. Willi represented Nortel Networks, Inc. in a patent infringement case relating to mobile telecommunications networking technology.  The case resulted in a favorable settlement for the client., 2005
  • Mr. Willi represented Trilogy Software, Inc. in a patent infringement case relating to computer software applications for configuration and pricing of complex products and services.  Trilogy obtained a multi-million dollar settlement., 2005

Transactions:

  • Willi Law Firm has prepared gun trusts for thousands of law-abiding gun owners, collectors, hunters, and competition shooters. He is the gun trust attorney recommended by many of the largest and most successful Class 3 dealers in the United States. In addition, he is the attorney that the Texas State Rifle Association invited to speak to its members about gun trusts at the upcoming TSRA 2017 Annual Meeting., 2016
  • Filed request for ex parte reexamination of U.S. Patent Nos. 5,538, 207; 7,174,362; and 7,392,283 and Canadian Patent No. 2,134,617., 2012
  • Filed numerous trademark and copyright applications on behalf of Getagadget, Inc., Mosaic Weighted Blankets LLC, Trident Concepts LLC, Dozen City LLC, FosterQuan LLP, Trident General Contracting LLC, and Premiere Hot Tubs, Inc., 2012
  • Willi Law Firm represented Cerium Holdings, Inc. in the purchase of Cerium Laboratories, LLC from Spansion, LLC, which included the preparation and negotiation of contracts for the transfer of millions of dollars worth of equipment and intellectual property, transfers of employees, and establishment of future services contracts between Cerium and its customers., 2011
  • Willi Law Firm advised and assisted this Austin-based publishing startup with its business strategy and formation.  After formation, Willi Law Firm assisted the new member and officers to execute all required documents at the company's organizational meeting., 2011
  • Willi Law Firm prepared a NFA trust (aka gun trust), which allowed the client, his wife, and his three adult sons—all law-abiding citizens—to obtain and possess NFA firearms, without the need to request permission from the sheriff or any other state or local official., 2011
  • Willi Law Firm advised and assisted this Austin-based startup with its business strategy and formation.  After formation, Willi Law Firm assisted the new member and officers to execute all required documents at the company's organizational meeting., 2011
  • Eagle Pass-based construction and hauling services startup requested legal advice regarding business entity formation in Texas.  Willi Law Firm interviewed the client regarding their business needs, provided legal advice regarding various types of Texas business entities, conducted a name availability search, and filed all required legal documents., 2011
  • Austin-based information technology and services startup requested legal advice regarding business entity formation in Texas.  Willi Law Firm interviewed the client regarding their business needs, provided legal advice regarding various types of Texas business entities, conducted a name availability search, and filed all required legal documents., 2011

Representative Clients:

  • ON Semiconductor Corporation, 2014
  • Blacklight Solutions LLC, Cerium Holdings, Inc., Getagadget, Inc., ON Semiconductor Corporation, OriginLab Corporation, 2013
  • Cerium Holdings, Inc., Dozen City LLC, Formats Unlimited, FosterQuan LLP, Getagadget, Inc., Glide LLC, Ipswitch, Inc., Kunaki LLC, Liveline Solutions, Inc., Mosaic Weighted Blankets LLC, Qfourr LLC, Premiere Hot Tubs, Inc., Readnotify Pty, Ltd., Southwest Austin Lacrosse Association, Inc., Trident Concepts LLC, Union Properties LLC, U.S. Digital Media, Inc., Vervante Corporation., 2012
  • Blue Lynk LLC, CaliberCode LLC, CD Technical, Inc., ET Industries, Inc., Expresso Satellite Navigation, Inc., Formats Unlimited, Inc., ION Geophysical Corporation, Journyx, Inc., Kunaki LLC, Liveline Solutions, Inc., MBI Corporation, Microframe Corporation, N5 Group LLC, Power Caster, Inc., Readnotify Pty. Ltd, Trident Concepts LLC, Trident General Contracting, LLC, Trident Roofing Company, LLC, U.S. Digital Media, Inc., Union Properties LLC, Vervante Corporation, Zebra Imaging, Inc., 2011
  • American Airlines, Air France, British Airways, Ericsson A.B., Korean Air, Nortel Networks, Inc., Northwest Airlines, OPTi, Inc., Trilogy Software, Inc., Versata Software, Inc., Visto Corporation, 911EP.

Other Outstanding Achievements:

  • Eagle Scout, 1980

Newsletters:

  • Attorneys from McKool Smith served as lead counsel for Sweden's Telefon AB L.M. Ericsson and Sony Ericsson, Inc., in wireless technology patent litigation against South Korea's Samsung Electronics Co.  The litigation was pending in District courts in the U.S., in two parallel investigations before the International Trade Commission, and in the United Kingdom, Germany and the Netherlands.  The global litigation was resolved by a worldwide cross-license agreement announced July 9.  Ericsson and Samsung agreed to drop all wireless-technology-related lawsuits between the two companies as part of the agreement., McKool Smith Attorneys Represent Ericsson in Global Litigation with Samsung

Educational Background:

  • Master of Laws in Intellectual Property and Information Law from the University of Houston, 2005
  • Master of Business Administration from the University of Houston, 1989
  • Bachelor of Science in Electrical Engineering from the University of Texas at Austin, 1985

Industry Groups

  • Austin Bar Association
  • Austin Intellectual Property Law Association
  • College Of The State Bar Of Texas
  • Office Location for James N. Willi

    9600 Escarpment Blvd.
    Ste. 745, PMB 34
    Austin, TX 78749-1983

     

    James N. Willi:

    Last Updated: 1/26/2017

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